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Motorola Solutions v. Hytera Communs. Corp.

United States District Court for the Northern District of Illinois, Eastern Division

January 31, 2020, Decided; January 31, 2020, Filed

Civil Action No. 1:17-cv-1973

Opinion

ORDER

Defendants' motion to preclude [*4]  Motorola from relying on extraterritorial damages [758] is granted in part and denied in part.

STATEMENT

On Monday, December 2, 2019, more than two years after this case was initially filed, Hytera Communications Corporation Ltd., Hytera America, Inc., and Hytera Communications America (West), Inc. (collectively, "Defendants,") filed a motion "to preclude Motorola from relying on extraterritorial damages." Dkt. 758. The motion was filed shortly after midnight, only hours before the thirteenth day of the ongoing jury trial. On that same day, Motorola Solutions, Inc. and Motorola Solutions Malaysia Sdn. Bhd. (collectively, "Plaintiffs") intended to call an expert to testify on damages, including extraterritorial damages. The Court, after a brief colloquy with defense counsel, exercised its discretion to provisionally allow testimony regarding extraterritorial damages, subject to the understanding that after the Court analyzed the motion and issued a ruling the jury would be instructed as to what damages it could properly consider or a limiting instruction if the Court ruled in Defendants' favor.

For the following reasons, Defendants' motion is granted in part and denied in part.

I. BACKGROUND [*5] 

By way of brief background, Plaintiffs have brought three claims against Defendants: trade secret misappropriation under the recently enacted Defend Trade Secrets Act of 2016, 18 U.S.C. §§ 1836(b), 1839 et seq., trade secret misappropriation under the Illinois Trade Secret Act, 765 ILCS 1065 et seg., and copyright infringement under the Copyright Act, 17 U.S.C. §§ 106, 501 et seq. In essence, Plaintiffs allege that Defendants hired three engineers away from Plaintiffs' Malaysian office, that those engineers stole and brought with them thousands of Plaintiffs' technical, confidential documents, and that Defendants used those documents, which contained trade secrets and lines of source code, to develop a state-of-the-art digital radio that is functionally indistinguishable from Plaintiffs' radios. Defendants then sold those radios all around the world, including in the United States.

Put simplistically, Defendants argue that none of these three statutes have extraterritorial effect and all damages should be limited only to domestic applications of the respective statutes. Plaintiffs respond by arguing that Defendants have waived this challenge, and even if they have not, the statutes should reach extraterritorially in this case—either because the statutes [*6]  apply extraterritorially or because the conduct being regulated by the statutes was domestic in this case and thus this case represents a proper domestic application of the statutes, which in turn allows Plaintiffs also to recover for damages extraterritorially.

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2020 U.S. Dist. LEXIS 35942 *; __ F. Supp. 3d __; 2020 WL 967944

MOTOROLA SOLUTIONS, INC., et al., Plaintiffs, v. HYTERA COMMUNICATIONS CORP. LTD., et al., Defendants.

CORE TERMS

trade secret, extraterritorial, misappropriation, private right of action, domestic, damages, occurring, provisions, geographic, courts, acquisition, theft, effective date, offender, parties, abroad, quotations, private cause of action, limiting language, clear indication, plain language, constitutes, durational, analyzing, amend, holds, extraterritorial effect, use of trade secrets, take place, Copyright Act